Effective: July 1, 1998
Amended: February 15, 2008
Intellectual Property Policy
The primary functions of a university are education, research, the expansion of knowledge and the application of that knowledge to advance the common good. It is in the context of advancing the common good that Washington University supports and encourages efforts directed toward bringing the fruits of Washington University research in diverse fields of knowledge to public use and benefit.
It is the policy of Washington University to publish research results and to foster the use of University inventions, discoveries and other works for the common good. In many cases, publication of research results and other scholarly works will be sufficient to serve this purpose. In other cases, to serve the common good, it will be necessary to secure protection of University intellectual property to encourage commerce and industry to invest their resources to develop and distribute products and processes for public use.
Washington University has established this Intellectual Property Policy ("Policy") for the management of intellectual property to:
Application of Policy.
This Policy applies to faculty, staff (including student employees), graduate students, post-doctoral fellows, and non-employees (including visiting faculty, affiliate and adjunct faculty, industrial personnel, fellows, etc.) who participate in research projects at Washington University.
Ownership of Intellectual Property.
Scientific research at major academic research institutions today is carried out in diverse technical and scientific fields. Such research can produce findings and results of exceptional academic interest as well as applications having a broad range of public uses and benefits. The University has a duty to promote the widest possible distribution of academic and public benefits and to facilitate the development of intellectual property, both to meet its social obligations as a tax-exempt institution of higher learning and to meet its obligations to disseminate the benefits of research funded by public grants and contracts. Effective dissemination and commercialization of such technology may require protection and licensing of University intellectual property.
University Responsibilities Associated with Intellectual Property.
The University recognizes that the research and teaching missions of the University always take precedence. At the same time, the University encourages the development by industry of inventions and technology resulting from University research, and seeks to facilitate the transfer of such technology for the use and benefit of the public. To these ends, the University shall:
Responsibilities of the Creators of Intellectual Property.
The creator of new intellectual property shall disclose in a thorough and timely manner all inventions, discoveries and other works that belong to the University as described in this Policy.
The creator shall provide such assistance as may be necessary throughout the technology transfer process to protect and effectuate transfer of the intellectual property, including assignment or transfer of the intellectual property to the University, if necessary;
The creator shall arrange for the retention of all records and documents that are necessary to the protection of the University's interest in the intellectual property;
The creator shall abide by all commitments made in license, sponsored research and other agreements, and laws related to federally and privately funded research; and
The creator shall promptly disclose all potential conflicts of interest to the appropriate Disclosure Review Committee in accordance with the Washington University Conflict of Interest Policies.
Oversight of Technology Transfer Activities.
The Vice Chancellor for Research will appoint a faculty committee to provide oversight of the University technology transfer activities and of the implementation of this Policy. Particular attention shall be paid by the committee to the technology transfer mission, budget, resolution of disputes and the division of intellectual property income. The committee will make recommendations to the Vice Chancellor for Research, will be named the Committee for Faculty Oversight of Technology Transfer and will be a standing committee representing all University faculty.
Administration, Protection and Dissemination of Intellectual Property.
Administration of University Intellectual Property.
The goal of the University's Office of Technology Management ("OTM") is to promote the transfer of University technology for society's use and benefit while generating income to support research and education. A wide range of Intellectual Property, developed through industrially funded research, publicly funded research, the use of unrestricted funds, or by some other course of research or creative activity, may be managed by the OTM. The OTM evaluates, obtains proprietary protection for, and assists in the commercial development of selected technology. The protection and commercial distribution of intellectual property may require funding from a source outside of the OTM, such as the creator's school, department or an outside sponsor.
Technology should be disclosed to the OTM in writing if the University has an ownership interest and the technology may be patentable or has potential for licensing. The OTM will provide disclosure forms on request. The creator should consult OTM with respect to their duties to disclose inventions and the manner and timeliness with which such disclosures should be made to the OTM.
Intellectual Property Rights Determination.
If the creator claims an ownership interest in intellectual property or has a question about whether an assignment must be made to the University, the property should be disclosed to the OTM and the claim or question clearly stated. The University, through the OTM, will provide a determination of rights within a reasonable time following submission, generally not to exceed 90 days. The determination may be appealed to the Vice Chancellor for Research for a final decision.
Evaluation of Intellectual Property for Protection and Commercial Development.
The OTM will evaluate inventions and other technology intellectual property disclosed to the OTM to suggest the form of intellectual property protection, if any, that should be considered and the potential for technology transfer through licensing.
Copyright The OTM will review copyrightable University intellectual property, including software, disclosed to it. In other instances the OTM may consult with creators to help ensure that proper notices are affixed to a work and that registration is made in a timely manner.
Patents The OTM will review invention disclosures and will consult with the inventor(s) and others as necessary to investigate the patentability and commercial potential of inventions. The OTM will also assist in determining whether a patent application should be filed.
The University, through the OTM, and the creator share responsibility for disclosing inventions and other licensable intellectual property and cooperating to make the intellectual property available commercially.
Dissemination of University Intellectual Property.
A commercial organization (company) may interact in a variety of ways with a creator of Intellectual Property. Interactions are defined in a variety of agreements among the company, the creator and the University. A partial list of the agreements includes: consulting agreements, research agreements and licensing agreements. More than one agreement may be active concurrently, which requires great care in reconciling the terms of the agreements. Interactions may be divided into those in which there is no personal income to the creator and no uncommitted income to the University and those in which either the creator may receive personal income and/or the University may receive uncommitted income. In general, a consulting agreement between a creator and a company can result in direct personal income that does not pass through the University. A licensing agreement to develop a particular piece of intellectual property results in income (cash or equity) to the University, which is distributed as specified by the University's Intellectual Property Policy and these Guidelines (see section 3 below). This may result in direct personal income to the creator as well as income to the University that is not committed to a particular project. A research agreement provides funds to conduct agreed upon research, is administered by the University and includes no direct personal income.
No Personal Income to the Creator and No Uncommitted Income to the University.
Personal Income to a Creator and/or Uncommitted Income to the University.
Basic Guidelines for Interactions Among Companies, Creators and the University.
There are basic principles that must be observed in the structuring of interactions among the creator, the University and a company.
Potential Financial Conflicts of Interest Arising from Commercial Development.
The possibility of a financial conflict of interest is inherent in the commercial development of intellectual property. Washington University has adopted Conflict of Interest (COI) Policies applicable to all faculty and staff and has established Disclosure Review Committees to develop and implement mechanisms to manage, reduce, or eliminate, when necessary, such financial conflicts for individuals engaged in research. These policies and guidelines are available at http://htcoi.wustl.edu/ or http://mscoi.wustl.edu/.
Financial interests that could be related to an individual's research must be disclosed to the appropriate Disclosure Review Committee (DRC). Special consideration must be given to licensing agreements that could be related to an individual's research. Regardless of value, these must be disclosed to the DRC to determine risk and appropriate management strategies.
It is important to note that the University may also have institutional conflicts of interest, which must be evaluated by the OTM and other responsible parties. Such conflicts are handled on an ad hoc basis and are outside the purview of the Disclosure Review Committee.
In general, the following factors increase the perceived level of risk present in a material conflict of interest:
A factor of particular relevance to interactions during the development of intellectual property is the ability of the creator to influence the value of a financial interest. For example, in the case of royalty payments from an established technology no longer being actively investigated at the University, the creator has little ability to change the amount of income. However, in the case of an ownership interest in a small company whose intellectual property portfolio is based on the creator's technology, particular results of studies performed under the direct supervision of the creator might have a significant effect on the value of that ownership interest.
The management strategies are graded with the degree of perceived risk. Management strategies include (but are not limited to) disclosure to all parties, concurrent review and negotiation of all relevant agreements, escrow of equity, and/or divestiture. In the event a conflict of interest cannot be effectively managed, the University may be unable to enter into an agreement.
The overall concern, and hence the level of management required, also increases as more risk enhancing factors are present. As a rough guide, the following interactions between a company and a creator are ranked in terms of increasing risk.
Division of Intellectual Property Income.
Washington University policy encourages the commercialization of the technology developed by its faculty, trainees and staff and provides for the sharing of any income derived with the creators of the ideas that produced the technology. The mechanism for the division of this income is here described in detail according to a resolution of the faculty Technology Transfer Committee.
The gross income from a particular intellectual property owned by the University is reduced by all technology transfer expenses that can be directly linked to it. The result is the net intellectual property income. Net income shall be calculated annually by OTM unless mutually agreed otherwise. The shares of net income shall be divided as follows:
The creators' share may be taken as personal income or may be waived in part or in total by the creator.
The share distributed to the creators' school shall be divided according to a policy determined by the administration of the school. However, this division shall include the creators' laboratory, the creators' department and other school budgets.
The Bayh-Dole amendment prescribes the sharing of intellectual property income derived from federally funded research with the inventors of patented ideas. Washington University policy extends the plan for the division of income to the creators of non-patentable ideas.
At times it may be difficult to determine what expenses can be directly charged to the gross income of a particular technology transfer agreement. Legal and patent expenses associated with a licensed invention are easy to allocate. However, delayed expenses, expenses associated with the realization of equity or expenses associated with related, but unlicensed inventions are often more difficult to allocate. In making these difficult determinations the following principles should apply:
The distribution of income shall, as closely as possible, follow the plan for division in force when the intellectual property was licensed. When an agreement with a sponsor includes equity to be held either by the creator, the University or both, such shares of the equity may be placed in escrow for the duration of the sponsor's support of University research and for a year thereafter, as determined by the DRC. Even though the determination of the creator's or the University's income from equity held in commercial ventures involved in technology transfer activities is complicated by the length of time usually required to determine the value of the equity and applicable tax and security laws and regulations, the appropriate plan for income division shall still be followed as closely as possible.
In the case of the division of income in the form of equity, as well as in the case of all intellectual property income, the creator may continue to receive income upon termination of employment with Washington University. Furthermore, income will pass to the creator's heirs as directed by the creator's estate.
Any disputed issues related to intellectual property, or the interpretation of the Washington University Intellectual Property Policy, shall first be reviewed by the OTM. Any disputed issues that cannot be resolved with the assistance of the OTM shall be referred to the Vice Chancellor for Research. The Vice Chancellor for Research may refer disputed issues to the Faculty Oversight Committee for its recommendations and advice. The Vice Chancellor for Research is the final arbiter of any disputed issues related to intellectual property, income distribution or the interpretation of the Policy.
Committee for Faculty Oversight of Technology Transfer.
The Washington University Intellectual Property Policy states that the Vice Chancellor for Research shall appoint a faculty committee to provide oversight of the University technology transfer activities. It is the responsibility of this committee to:
Members of the Committee for Faculty Oversight of Technology Transfer shall be selected to be representative of the faculty as a whole, shall serve for staggered three-year terms and shall be a standing committee. The committee and its chair shall be selected by the Vice Chancellor for Research.
Report to Senate Council.
The Vice Chancellor for Research shall report annually to the Senate Council on the University's technology transfer program. This report shall include the program's financial results and a brief description of patenting and licensing activities. Included in the report shall be comments and recommendations from the Committee for Faculty Oversight of Technology Transfer.
Amendment of the Guidelines.
These Guidelines may be amended by the Vice Chancellor for Research upon recommendation by the Committee for Faculty Oversight of Technology Transfer.
Conflicts Between Policy and Guidelines.
In all instances of real or apparent conflict between University policies, including the Washington University Intellectual Property Policy and the Policy on Conflict of Interest, and these Guidelines, the policies will control.
Useful Definitions in Discussions of Technology Management and Conflict of Interest
Academic Freedom : A privilege of scholars to choose their own research field, to enter into collaborations with others, and to communicate with others regarding their scholarly efforts. A core University principle.
Assignment : The transfer of rights and title in real, personal or Intellectual Property by a written instrument with the result that the assignee is vested with rights of ownership. A federal statute requires that the University obtain Assignment of Inventions that have been conceived or created in a project supported by federal funds. Other Intellectual Property may be assigned to the University, or to other parties pursuant to a Research or License Agreement. If the Invention is not one that must be assigned to the University by law or University policy, the Invention ownership may remain in the Inventor(s).
Commercial Venture : A start-up company, partnership, joint venture, corporation or any other enterprise entity that has obtained a License to University technology in exchange for equity in the enterprise entity.
Conception : Creation in the Inventor's mind of a new and useful way to solve a problem; the act of visualizing an Invention, complete in all essential detail; this occurs when a solution is formulated, not when a problem is recognized. Conception is the unequivocal mental discovery of an invention.
Confidentiality Agreement : May be a separate agreement between disclosing and recipient parties, or may be a term in a Research Contract or License Agreement. When it applies to information disclosed by a company to a University employee, the recipient employee may agree to be personally bound not to release the company confidential information unless expressly permitted by the company. When it applies to information disclosed by a University employee to a company, it is usually meant to prevent the company from using the information without permission, and to protect the patentability of any Invention, or trade value of other technology, disclosed by the University Inventor or Creator to the company. University Contracts protect the right of faculty, students and other employees to publish the results of their work, but may allow for brief delays to file Patent applications or otherwise protect Intellectual Property.
Conflict of Interest : Conflict of interest exists if an employee's position or authority may be used to influence or make decisions that lead to any form of financial or personal gain for that employee or for his or her family. A conflict of interest is material if an ordinary person would take it into account in making a decision. In academic research, the term conflict of interest refers especially to situations in which financial or other personal considerations may compromise, or may have the appearance of compromising, an investigator's professional judgment in conducting or reporting research. The bias such conflicts may conceivably impart not only affects collection, analysis and interpretation of data, but also the hiring of staff, procurement of materials, sharing of results, choice of protocol, and the use of statistical methods.
Contract : A legally binding mutual agreement between two or more parties in which an exchange of value (consideration) occurs, and which obligates each party to certain duties covering this exchange. Those signing such an agreement must be authorized to bind the entity that they represent.
Copyright : As provided in Copyright law, a Copyright owner has the exclusive right to reproduce the work, prepare derivative works, distribute by sale or otherwise, and display or perform the work publicly. Under federal Copyright law, Copyright exists in "original works of authorship" fixed in any tangible medium of expression, now known or later developed from which the work can be communicated in some manner. Copyright does not protect mere ideas, concepts, procedures, systems, methods or principles. Copyright does protect the expression of ideas, concepts, etc., in the forms of a literary work, musical work, computer program, video, motion picture or sound recording, photograph, sculpture, and so forth. The exclusive rights enumerated above are subject to certain statutory limitations including fair use, library and archival reproduction, and transfer of a particular book or a phonorecord by its owner. Copyright vests initially in the author(s) of a work, or the employer if the work was made for hire. Generally, Copyright subsists from creation and endures for a term consisting of the life of the author plus fifty years. The duration is seventy-five years from the year of first publication for anonymous and pseudonymous works and works made for hire. Though Copyright vests automatically, certain steps must be taken to reserve some important rights against infringers: a notice must be displayed on all published and distributed copies of a Copyrighted work. The notice must contain the symbol ©, the year of first publication, and an identification of the Copyright owner. The Copyright must be registered with the U.S. Copyright Office to reserve certain statutory remedies for infringement.
Creator : Person or persons, who may be faculty, staff or student, either Inventors or those who do not meet established legal standards of inventorship and thus may not be named on a Patent application, but who have participated in the creation of an Invention, discovery or advancement of some technology.
Creator's Laboratory : The University facilities which provide the means and opportunity for experimentation, observation and/or practice in the Creator's particular field of study.
Creator's Notebook : Usually a bound workbook. Details should be entered in ink, dated, entered regularly and witnessed; the notebook may become crucial in a court proceeding or in research integrity investigations.
Creator's Share : The Creator's Share of Net Income is determined by University policy. If there is more than one Creator, each receives an equal portion of the Creator's Share, unless the co-Creators agree to a different distribution.
Disclosure : The sharing of information with one or more individuals.
Confidential Disclosure : Sharing of proprietary information (such as the description of an Invention), that is protected against unauthorized disclosure by a Confidentiality Agreement between the disclosing and receiving parties.
Disclosure of Financial Interest : An employee's description of his/her income from or ownership interest in an unrelated party, if such financial interest might create or appear to create a Conflict of Interest. This Disclosure is required by University Conflict of Interest policy.
Enabling Disclosure : A description of an Invention, in a Patent application or in a Publication, that could allow a person skilled in the art to replicate the Invention.
Invention Disclosure : Typically used to describe a formal (written) description of an Invention that is confidentially made by the Inventor to his/her employer. At Washington University an Invention Disclosure should be an enabling one, should include details as to co-inventors and funding sources and should be sent to the Office of Technology Management by an Inventor. Such a Disclosure is the "first alert" to the University that an Invention has been made.
Equity or Equity Shares : Shares of common or preferred stock, warrants, options, convertible instruments, units of a limited partnership, or any other instrument conveying ownership interest in a Commercial Venture.
Escrow : In the University, this is a means to sequester tradable Equity during the period of a high level Conflict of Interest, such as the ownership of more than 5% of the financial interest of a licensee company that also supports research in the laboratory of the Creator(s) of the licensed technology.
Federal Ownership Rights: These rights cover both data and software and arise from certain federal grants and Contracts. They require that Intellectual Property (other than patented Inventions) that are developed under those Contracts be owned by the federal government. When such Contracts are in force, the University must require faculty and employees working under such funding to assign ownership of the Intellectual Property (e.g., software or data) to the University for conveyance to the federal government: The regulations covering such Intellectual Property are not uniform across federal agencies, and sometimes waivers may be sought in advance, or a petition for greater rights may be entertained.
Financial Interest : Any relationship, including a consulting relationship, entered into by the employee or his or her family, other than employment by the University, that could result in financial gain for the employee or his or her family.
Income : Funds received by the University under a License Agreement.
Gross Income : Funds obtained from commercialization of technology under a License Agreement. Gross Income may include License Fees, milestone payments, minimum annual Royalties, earned or running Royalties, Equity, equipment, or reimbursement of Patent expenses and fees. Does not include research support in a mixed purpose Research Contract/License Agreement.
Net Income : Net Income is Gross Income less unreimbursed University expenses for Patent prosecution and licensing expenses associated with a particular License Agreement (e.g., travel made expressly to negotiate a particular License Agreement). Net Income may be subject to sharing with Inventors and Creators and is distributed in accordance with University policy.
Intellectual Property : Ownership and associated rights relating to scientific discoveries, technological advances, compilations, and original works of art, literature or music. Intellectual Property includes Patents, Trademarks, Copyrights, Trade Secrets and other species such as computer software, Mask Work, printed material, or Tangible Property. The formal protections provided by Patents, Copyrights or Trademarks may be used to preserve some Intellectual Property from unauthorized use or misappropriation or seek remedies therefor. Secrecy and confidentiality may be used to sustain other properties. Intellectual Property is created when something new and valuable has been conceived or developed, or when unusual, unexpected, or non-obvious results have been discovered with existing technology and which can be applied to some useful purpose. Intellectual Property can be created by one person or co-created by several.
Artistic Intellectual Property : Aesthetic, decorative, illustrative elements protected primarily by Copyright.
Intellectual Property Enforcement : Unauthorized use of a patented Invention, Copyright, Trademark, or other Intellectual Property is an infringement of rights or misappropriation of property for which legal remedies may be sought. The decision to enforce Intellectual Property rights is complex and highly dependent on factors such as the commercial value of the rights in question. University owners of Intellectual Property may be sued when they or their licensees infringe rights belonging to an unrelated party, or a university may bring suit against an unrelated party for infringement of Intellectual Property rights belonging to that university.
Literary Intellectual Property : Literary works of authorship protected by Copyright.
Technology Intellectual Property : Practical scientific knowledge embodied in a Patent, Patent application, Copyright, Mask Work or Trade Secret.
Invention : A creation of Intellectual Property which did not exist previously. Also, more specifically, the Conception and reduction to practice of a useful, novel and non-obvious product or process, or improvement thereon, for which a Patent may be obtained.
Inventor : An Inventor is as defined by United States patent statutes and case law. Generally speaking, an Inventor is an individual who has contributed to the conception of the intellectual property. Final and non-appealable Inventor determinations shall be made by the Vice Chancellor for Research or that office’s designee, with the assistance of the OTM and the Office of the Executive Vice Chancellor and General Counsel.
Joint Patent Ownership : Equal and non-accountable (to each other) ownership of Patent rights.
Know-how : The knowledge, innovations, practices, expertise, processes or procedures, and secrets of individuals regarding the use of a material, product or
License : A License is a Contract which awards to a party other than the owner(s) of the Intellectual Property the right to make, use, sell or import products or services based on the owner's Intellectual Property. Licenses may be awarded on an exclusive or non-exclusive basis and may provide for payment of License Fees, Milestones, Royalties, or other Income to the owner(s) of the Intellectual Property.
License Agreement : A License is frequently called a License Agreement.
License Fee : Generally, the money paid by a licensee to the licensor at the time License is signed. Can also be called a License Issue Fee.
License Option : A Contract between the University and another party which conveys to that party the right to negotiate for a License to certain Intellectual Property, generally on terms within certain specified parameters. If the option is exclusive, the University agrees to refrain from granting a License to a third party during the option period. Exclusive options on future Inventions are often offered in return for the agreement of the unrelated party to pay for Patent costs and/or to support research. Not to be confused with stock options, which are agreements that require conveyance of Equity. (see also: Right of First Refusal)
Mask Work : A series of related images embodying the original, pre-determined three-dimensional topography of a semiconductor chip product, regardless of how the topography may be encoded (an optical mask on glass or an electronic mask in a computer). A Mask Work must be fixed in a chip substrate from which it can be perceived or reproduced. Protection endures for ten years from registration with the Copyright Office or from commercial exploitation, whichever occurs first. A Mask Work must be registered with the Copyright Office within two years of commercial exploitation to be protected under the statute. Notice is permissive (not prerequisite to protection or enforcement). The electronic circuitry embodied in a chip may be patented, but the design or layout itself, protectable as a Mask Work, generally lacks the requisite level of inventiveness to be patented. There is a reverse engineering privilege in the chip protection law similar to the fair use doctrine in Copyright law.
Material Transfer Agreements : The transfer of proprietary Tangible Property, often biological materials, is covered by a contract called a Materials Transfer Agreement. Such contracts may cover materials coming into the University from academic or industrial sources, or may cover materials going out from the University to academic or industrial recipients. Negotiated terms of such agreements may cover the use of the original materials, progeny materials produced by self-replication of the original sample, and modifications of the original materials. Points of contention in negotiations include preservation of Publication rights, preservation of ownership, disposition of liability arising from hazardous materials, and ownership of new Inventions arising from the use of the materials. Materials Transfer Agreements (MTAs) may significantly affect the ability of the faculty to collaborate with or accept funding from unrelated parties.
Patent : A U.S. Patent is a grant which gives the owner of the Invention covered by the Patent the right to exclude all others from making, using, selling or importing the Invention in the United States. In the United States, a utility Patent provides that exclusive right for twenty years from the date of filing (if the application is filed on or after June 8, 1995) or seventeen years from date of issuance (if the application was filed prior to that date). To qualify for U.S. Patent protection, an Invention must comprise a machine, article of manufacture, process, composition of matter, or some improvement on those. It must be deemed useful, novel, and non-obvious to one skilled in the art, and must not have been in public use or on sale in the United States or described in a Publication as defined below, anywhere in the world for more than one year prior to the filing date of the U.S. Patent application.
Patent Ownership : (also, Patent Title) In the case of a Patent, the owner is the entity which holds the Patent Assignment. Ownership originally vests in the Inventor(s), but law or agreement may require that Patents be assigned to an employer or another.
Patent Rights : The right to obtain a Patent in many foreign countries can be lost if there has been any public Enabling Disclosure of the Invention, verbal or written, anywhere in the world prior to filing the foreign Patent application. However, if the U.S. Patent application has been filed prior to any Enabling Disclosure of the Invention, Patent applications may still be filed in foreign countries within one year of the U.S. filing date in those countries which adhere to an international convention even if there has been an intervening Publication. Loss of Patent Rights results from the operation of legal events frequently called "bars" or "statutory bars". The Patent laws of the U.S. and many foreign countries provide for bars to patentability. Questions about bars may be addressed to the Office of Technology Management.
Publication : As related to Inventions and Patents, a Publication is a public Enabling Disclosure of an Invention, and may be verbal or printed. Printed Publications include abstracts, student theses and, in certain instances, grant proposals, whether funded or unfunded. A public Enabling Disclosure is a non-privileged, non-confidential communication. It is important to emphasize that such a Publication may jeopardize the ability to obtain a Patent, in the U.S. and abroad. Publication usually limits the potential Patent to the U.S., and then only if an application is filed before the expiration of one year from Publication. Questions about the implications of Publication can be addressed to the Office of Technology Management.
Research Contract or Agreement : A separate agreement to fund and conduct research, which research may or may not be related to licensed technology.
Right of First Refusal : Similar to a License Option. In return for research funding and/or payment of Patent costs, the University may agree that it will not execute a License with any other party without offering such License to the company supporting the University. The terms offered to the supporting company are the same terms as those offered to a third party. The optionee then has the first right to accept a License based on the proffered terms.
Royalties : Royalties are compensation for rights in Intellectual Property and are usually expressed as a percentage of revenue received by the licensee from sales of a product.
Service Agreement : A contract between the University and a company in which the University agrees to perform certain tasks, such as evaluation, field testing, or clinical trials, using the protocols, either directly specified by the company or developed by the University, to meet very specific criteria and data requirements set by the company. Often, the products or processes being tested are already covered by dominant Intellectual Property protection belonging to the company, and improvements made by the University participants are usually assigned to the company. Publication rights are sought by the University in all such agreements.
Tangible Property : Tangible Property is anything having a physical embodiment (e.g., cell lines, software, devices, compositions of matter) whether or not patentable or copyrightable.
Trade Secret : Trade Secrets comprise confidential data, information or compilations used in research, business, commerce or industry. Universities, government agencies, business entities and individuals may own and use Trade Secrets. The information may include confidential scientific and technical data and business, commercial or financial information not publicly known which is useful in an enterprise and that confers competitive advantage on one having a right to use such information. The secrecy of the information must be maintained to conserve its Trade Secret status. Trade Secret information may be disclosed or shared under the terms of a Confidentiality Agreement. Confidential information may be created in sponsored research projects; the sponsor will generally require the University and the Creator to preserve the secrecy of the information. Trade Secrets in the form of know-how and show-how may be vital to the practice of patented Inventions and other innovations. Trade Secret information may have considerable value by itself or in conjunction with other forms of Intellectual Property. Trade Secrets and related legal remedies are governed primarily by state law. Federal public contract law may apply to Trade Secrets in the form of technical data created under federally funded research projects (Federal Ownership Rights).
Trademark : A trade or service mark consists of a word, symbol, phrase or design, or combination of these, and exists for the exclusive use of the holder in identifying the source of a product or service. Marks are identified by the symbols ®, or SM. Marks have no necessary relation to Invention or discovery. Unlike Patents and Copyrights, marks can exist for an indefinite time. Marks can be registered in the U.S. Patent and Trademark Office.
Trigger Date : The date Equity held in Escrow by the University is no longer subject to restrictions imposed by the University to mitigate Conflict of Interest.
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